TRADE DRESS, TREATY RATIFICATIONS, VANICORNS, MARIO KARTING IN TOKYO AND STRIPES

Good morning everyone. Finally, February is here and with it the latest news.

The pink pouch as a trade dress

Glossier, a beauty brand, tried to register back in spring 2019 before the USPTO (US patent and trade mark office) its pink zip lock pouch in which every product reaches consumers. The application was initially dismissed because the packaging was deemed as non-distinctive. Indeed, for products that are going to be shipped, it is normal to use a bubble wrap package to protect goods in transit and as far as the USPTO is concerned, Glossier has failed to prove that the pink bubble bag has acquired distinctiveness amongst consumers (this is proven through unsolicited media attention, advertising expenditures, sales success…).

This month, Glossier amended its trade mark application further specifying its trade mark application: Glossier does not have any claims over the air bubbles but is claiming rights over the color pink applied to such packaging. The brand goes on to prove that said pink packaging has acquired distinctiveness amongst consumers: consistent use since 2014, featuring the pinch pouch on their website, in their emails, in social media posts… It is now up to the USPTO to decide if Glossier has provided enough evidence.

Indonesia ratifies the Beijing Treaty on Audiovisual Performances

Indonesia is the 30^th country to ratify the Beijing Treaty, which will now enter into force on the 28^th of April. This treaty deals with the rights of performers in audiovisual performances, notably by bolstering five kinds of exclusive economic rights for the beneficiaries’ performances fixed in an audiovisual format: reproduction, distribution, rental, making available and broadcasting and communication to the public.

Indonesia joins the Marrakesh Treaty

Indonesia has also joined the Marrakesh Treaty, which now covers 90 countries. This Treaty makes the production and international transfer of specially-adapted books for people with blindness or visual impairment easier by establishing a set of limitations and exceptions to traditional copyright law.

Uruguay joins the Singapore Treaty of the Law of Trademarks

Uruguay has now joined the Singapore Treaty that seeks to create a modern and dynamic international framework for the harmonization of administrative trade mark registration procedures. Want to learn more about IP in Uruguay? Contact our colleagues from the Latin America Helpdesk.

Disney sued by artist over Unicorn van in Pixar’s latest movie

Sweet Cicely Daniher is a Californian artist that claims that Disney, Pixar, and producer Kori Rae copied the design of a painted unicorn she made for her own van. Apparently, Pixar reached out to her in September 2018 to rent her van for an event they were organizing. A few months later, she learned about the film and the use of a similar van (“vanicorn” if you want…) after which she decided to file for copyright infringement, seeking compensatory damages and a court injunction that would prevent the animated film from being released. However, it seems that the drawing of the unicorn is actually a copy of a work created by another artist who hasn’t been given credit. Let’s see how this unfolds…

Intellectual property and the transition period

On the 31^st of January, Brexit was made effective. Many now wonder about what will happen to their IP rights. Well, the UKIPO has stated that until the 31^st of December of this year EU law will continue to operate as usual in the UK. You can read a more in-depth explanation here.

Nintendo wins real-life “Mario Kart”

Only in Japan would a company bring Mari Kart to life. Mari Mobility is a Japanese company that offered customers karts and Nintendo character’s costumes to drive said karts in the streets of Japan. Regardless of the safety of this practice, Mari Mobility tried to dodge the lawsuit by changing its name to Street Kart, stating that they provide “superhero outfits” and clearing stating that Street Kart is in no way a reflection of Nintendo's game “Mario Kart”. The Court, however, sided with Nintendo on this and awarded the company 450,000 $ in damages. If you see the images of the racing karts and costumes it is, indeed, difficult to not think about Mario Kart…

H&M prevails over Adidas

The legal battle goes back to 1997 when H&M started selling its own sportswear that would include two parallel vertical stripes on sleeves (for T-shirts) and on the leg (for pants). Adidas considered than in doing so H&M was likely to confuse consumers about the source of the products. H&M replied by saying that the use of the two stripes was purely decorative and had no intention to identify the origin of the product or serve as a trade mark, therefore the use of a common sign (a stripe) that can be used by anyone does not amount to infringement.

This legal battle is anything but short. The question went all the way up to the CJEU that just established that in order to assess likelihood of confusion, one must be based on the public's perception of the goods bearing Adidas's trademark, on the one hand, and H&M’s striped goods on the other, therefore H&M's argument that common patterns must be available for all to use is not relevant to this case. The decision of whether or not there is a trade mark infringement was left to the national courts. After a lengthy process of appeals in The Hague, the court of appeal decided that H&M has not infringed Adidas’ mark given that the likelihood of confusion between the two was not proven.

That’s it for today! See you next week and enjoy.